IP Policy and Law Reform
PIJIP is actively engaged in the analysis and reform of patent, trademark and copyright laws. PIJIP faculty and staff have filed amicus briefs in the Supreme Court and Federal Appellate Courts, drafted model legislative provisions, prepared and delivered testimony to Congress, and consulted for numerous domestic and international non-profit and intergovernmental organizations and legislators on issues involving intellectual property law reform. In addition, PIJIP events held throughout the year highlighted many intellectual property law reform issues. Most of the PIJIP events remain available for download via webcast.
Piracy and International IP Enforcement
Media Piracy in Emerging MarketsStudy sponsored by the Social Science Research Council of music, film and software piracy in emerging economies.PIJIP Professor Sean Flynn and PIJIP staffers contributed to the report. Media Piracy in Emerging Economies traces the explosive growth of piracy as digital technologies became cheap and ubiquitous around the world, and follows the growth of industry lobbies that have reshaped laws and law enforcement around copyright protection.
Patentable Subject Matter
Amicus Brief of Eleven Law Professors and AARP for Bilski v. Kappos. (October 2, 20090).
Professor Joshua Sarnoff's brief
in the pending Supreme Court case, Bilski v. Kappos, about whether
business methods are patent eligible “inventions,” on behalf of eleven law
professors and AARP. Although the Bilski brief focuses on
business methods (and the legal category of unpatentable “abstract ideas”), it
also explains how to draw the line between the patentable inventions and
unpatentable science and nature. In addition, the brief explains why these
concerns are of Constitutional stature, and not just questions of how far
Congress has legislated and whether it has sought to extend the patent system
beyond its historic contours.
Amicus Brief of five Medical Associations in Association for Molecular Pathology v. United States Patent and Trademark Office. (August 2009).
Brief and motion filed by Professor Sarnoff on behalf of five medical associations in a case dealing with the patentability of Myriad gene patents. The brief argues that Myriad's patents should be invalidated because they cover products of nature (genes) and laws of nature (the link between gene mutations and higher probailities of cancer). Also see the Motion to File
Joshua Sarnoff. Shaking the Foundations of Patentable Subject Matter. Preliminary Discussion Draft (April, 2008).
This article describes the history and character of the exclusions from patentable subject matter for "laws of nature, natural phenomena, and abstract ideas" (or science, nature, and ideas), which include "mathematical 'algorithm[s],'" "products of nature," and "mental processes."
Brief of Joshua Sarnoff for Ten Law Professors as Amici Curiea Supporting Appellee Director of the Patent and Trademarket Office, In Re Bernard L. Bilski and Rand A. Warsaw for Hearing En Banc. (April 7, 2008).
The Bilski case addresses the patentability of a three-step method of hedging commodities consumption pricerisks.
Trademark Dilution
Christine Haight Farley, Trademark Dilution Law: A Remedy in Search of a Harm, 16 Fordham Intell. Prop., Media & Ent. L.J. 101 (2006). SSRN Link
This paper discusses the analyzes the law and policy of trademark dilution in the wake of the Supreme Court’sopinion in Moseley v. Victoria's Secret Catalogue.
Patent Reform
Joshua Sarnoff, Analysis of Supreme Court patent law decision in KSR v. Teleflex, No. 04-135. SCOTUS Blog Link
In its unanimous decision in KSR Int’l. Co v. Teleflex Inc., No. 04-1350 (April 30, 2007), the Supreme Court expressly overruled the Court of Appeals for the Federal Circuit’s “teaching-suggestion-motivation” (“TSM”) test for finding a claimed invention obvious and reaffirmed the Court’s precedents regarding the obviousness of patents “based on the combination of elements found in the prior art” where there the combination “does no more than yield predictable results.”
Joshua Sarnoff, The Historic and Modern Doctrine of Equivalents and Claiming the Future, Part I (1790-1870), 87 J. Pat. & Trademark Off. Socy. 371 (2005). SSRN Link
Patent law has extended protection beyond the explicitly disclosed examples of an invention described in a patent specification, protecting some range of equivalent substituted technologies. This aritcle describes conflicts among the modern doctrine and prosecution history estoppel and additional implied disclaimer and claim scope doctrines.
Joshua Sarnoff, The Historic and Modern Doctrine of Equivalents and Claiming the Future, Part II (1870-1952), 87 J. Pat. & Trademark Off. Socy. 441 (2005). SSRN Link
Until 1950, the Supreme Court consistently limited the doctrine of equivalents under the 1870 Patent Act to the scope of application of construed claim language. In the 1952 Patent Act, Congress neither codified nor impliedly ratified the doctrine of equivalents.
Joshua Sarnoff, The Doctrine of Equivalents and Claiming the Future After Festo, 14 Fed. Cir. B.J. 403 (2005). SSRN Link
In two recent cases, the Supreme Court unanimously approved of the modern doctrine of equivalents articulated in Graver Tank (1950). The Court also extended equivalents protection to later-arising technologies and imperfectly reconciled the modern doctrine with the doctrine of prosecution history estoppel for amended claims.
Copyright, Technology and Art
Christine Haight Farley, Judging Art, 79 Tul. L. Rev. 805 (2005). SSRN Link
What is art? Surprisingly, this question is addressed in various placesin the law. At these junctures, courts typically attempt to avoidmaking a judgment. Indeed, the law generally resists any definition ofart. The reasons given for this are that these determinations are toosubjective for the courts and that judges lack proper training andexpertise. Thus, the doctrine of avoidance is the most stable andexplicitly stated proposition to be found in these encounters. However,the question of whether an object is a work of art for treatment underthe law is often unavoidable.
Christine Haight Farley, Copyright Law’s Response to the Invention of Photography, 65 U. Pitt. L. Rev. , 385 (2004). SSRN Link
In 1884, the Supreme Court was presented with dichotomous views ofphotography. In one view, the photograph was an original, intellectualconception of the author-a fine art. In the other, it was the mereproduct of the soulless labor of the machine. Much was at stake in thisdispute, including the booming market in photographs and theconstitutional importance of the originality requirement in copyrightlaw.
Cross-cutting Events
AU/WCL Webinar Series on Current Topics in International Patent Law
WCL and Arnold and Porter have cosponsored "Keeping Current in International Patent Practice," a series of webinars meant to help practitioners keep informed about developments affected patent prosecution, enforcement, and related matters, including compulsory licensing and antitrust in multiple jurisdictions.
Brown Bag Lunch Speaker Series.
PIJIP sponsors brown bag lunches with area academics to discuss on-going research and recent events on IP and information justice topics. The lunches are normally held on a Tuesday from 12:30-2pm. To be added to a mailing list to recieve Brownbag Lunch invitations, email sroberts@wcl.american.edu
Works in Progress Intellectual Property Colloquium, September 28-29, 2007.
The Colloquium offers an opportunity for intellectual property scholars to present their works-in-progress and get early feedback from their colleagues.
Finnegan, Henderson, Farabow, Garrett & Dunner, Distinguished Lecture on Intellectual Property, October 25, 2007.
Each Fall, PIJIP sponsors a distinguished lecture on intellectual property that is attended by many of the nation’s leading IP scholars and practitioners. On October 25, 2007, Trademark Professor Thomas McCarthy will deliver the Distinguished Lecture. The most recent lecture was given by Judge Alex Kozinski of the 9th Circuit Court of Appeals who discussed "Revisiting Fair Use.”
Partners
Attribution for photos posted on flickr.com under a creative commons license: Photo of molecule model by net efekt. Photo of mathematical equation by dullhunk. Photo of Chicago Board of Trade by Larsz. Photo of Victoria's Secret bag by iirraa. Photo of gas petal from Patent n. 6,237,565. Photo of steam engine locomotive by DigitalParadox. Photo of airplane by Feuillu.
PIJIP and the Federal Circuit Bar Association recently co-hosted "Patentable Subject Matter After the Bilski Oral Argument." The case has drawn a great deal of interest because it addresses the question: What is the proper legal standard for determining whether a kind of process is capable of receiving patent protection? The event focused on the arguments made to the United States Supreme Court, and featured counsel for the parties.
